Registering and protecting foreign Intellectual Property Rights in Nigeria is a necessity for any non-Nigerian business that desires to take a slice of the almost 200 Million strong import-dependent domestic market that Nigeria presents. This would cover all brand defining rights such as Copyrights, Trademarks, Patents, Industrial Designs as well as other non-traditional rights such as Trade Secrets, Image Rights Protection, Unfair Competition, Passing Off etc.
An added reason; even for a foreign business that is not necessarily interested in immediately entering the Nigerian market; is to forestall pirates, counterfeiters and trolls breaking into the market "on their behalf" in advance. This could soil the company's brand in Nigeria and wreak future market entrance plans.
In this article, we would be answering the question:
Can non-Nigerian businesses register/protect their Intellectual Property Rights in Nigeria in a cost effective manner?
This article highlights some of the different alternatives open to foreign businesses to effectively protect their brands and Intellectual Property in Nigeria whether they are resident or have an organizational presence in Nigeria. We also proffer anticipatory protection solutions for businesses that are considering entering the Nigerian market in the future.
Before we conclude, we shall also provide practical illustrations of the advantages and dangers of not securing the appropriate Intellectual Property protection for foreign products that have prospects in Nigeria or are already being imported informally into Nigeria. The successful example of the oil supermajor ExxonMobil; a long time player in the Nigeria market would be discussed using a decided case. The negative Australian scenario of the Sydney 2000 Olympic symbols "ambush-marketing" debacle would also be used to drive the point home.
2. Key Deliverables
We shall presently look at the following in this article:
- The Territoriality of Intellectual Property and the need to obtain separate protection in Nigeria.
- Some International Intellectual Property Rights systems relevant to Nigeria.
- Summary showing why every foreign business should secure separate Intellectual Property Rights protection in Nigeria.
3. The Territoriality of Intellectual Property rights and the need to obtain separate protection in Nigeria
A good question would be: having secured adequate Intellectual Property protection in their home country, why should a non-Nigerian business bother to separately register/protect the same products in Nigeria?
Globalization and the virtual disappearance of national borders in the world of business and commerce has created a global market for products. Unfortunately, globalization has not blurred the Territorial effect of these borders.
In effect, Intellectual Property protection offered by nations has municipal effect i.e. valid only within that nation's territory. This means that for a foreign Intellectual Property Right to be accorded protection in Nigeria; separate protection must be obtained in Nigeria. Otherwise, the product can become easy prey for pirates, counterfeiters, trolls, or some other form of ambush-marketing.
In addition to the primary predatory activity, such Intellectual Property rogues may even go further to obtain Intellectual Property registration in Nigeria over such products thereby freezing the legitimate owner out. This is because registration of an Intellectual Property right in Nigeria is typically done on a "first to register" basis and also includes the right to prevent importation or dealings in those products within the territory of Nigeria.
In the conclusion to this article, we will discuss how this kind of activity almost ruined the Syndey 2000 Olympics games!
A limited but tricky way to protect products against such trolls from a Trademark law perspective could be the invocation of the principle of well-known mark which is applicable in Nigeria. This is however not advisable for several reasons including:
- Heightened burden of proof because of the first to register presumption,
- Uncertainty of a judicial contest,
- Possible award of an interim/interlocutory injunction against the unregistered well-known mark due to the first to register presumption operating in favour of the troll,
- Possible delays engineered by the nefarious character after securing an injunction. This would delay the Court case and in effect freeze out the foreign Intellectual Property right holder till the entry of the products become irrelevant,
- Or as an unsavory alternative to the above, an extortionate pay off!
The primary way a foreign business can register and protect its Intellectual Property in Nigeria is by applying separately for registration in Nigeria. Nigerian law does not prohibit foreign businesses from holding Intellectual Property rights in Nigeria, whether directly, through a Nigerian subsidiary or through a Nigerian agent or partner. The requirement and procedure for registering an Intellectual Property right in Nigeria is well laid out in our article "Intellectual Property in Nigeria Series – No.2: Requirements and Procedure to Register Copyrights, Trademarks, Patents and Designs".
4. International Intellectual Property Rights Systems and Organizations relevant to Nigeria
It must be restated that Intellectual Property rights are municipal! Despite the use of the term "International Intellectual Property Rights"; registration or grant of Intellectual Property right, its protection, and its enforcement always remains with individual nations. The so called "International Intellectual Property Rights" merely refers to agreements between nations to subscribe to a uniform set of requirements that would lead to those several nations considering an application to grant protection, but actual grant would still be considered and given by the nation or in some cases bloc of nations subject to their own standards.
Secondly, we must note also that this International Systems are not automatically applicable to every country. Only countries that have signed up to the Treaty governing a system are covered.
Several International Intellectual Property Rights systems exist that could allow a foreign business in Nigerian to benefit from the Intellectual property it has registered in its home country.
- Berne Convention
(1886): This is the oldest International Law governing
Copyright, it was ratified in 1886 but its latest version was
adopted in Paris in 1971. It provides a minimum standard for
protection of Copyright and establishes a system where no formal
registration is required for Copyright protection. It uses the
"Principle of National Treatment" where countries are
required to recognize the Copyright of foreigners without any
further formalities. This is the closest system to true
"International Intellectual Property Rights
Thus, a foreign business in Nigeria automatically enjoys its Copyright protection if its home country is a signatory to this Convention.
However this rather settled point of international law has been challenged by the Nigerian Courts in the case of Microsoft Corporation v. Franike Associates Ltd (2011) LPELR-CA/L/573/2008. The Nigerian Court held that while the Copyright of a foreign company like Microsoft was protected in Nigeria, for the purpose of an infringement litigation it requires a certificate from the Nigerian Copyright Commission stating that its home country (the United States) is a signatory to the relevant international treaties such as the Berne Convention.
- WIPO Copyright Treaty (WCT): This Treaty addresses the protection of Copyright in the face of the internet. It broadens the application of the Berne Convention to cover broadcasting over the internet. Hence under the WCT the Copyright of a foreign business in Nigeria are guaranteed against on-line related infringement.
- Paris Convention:
The Paris convention has provisions for registration of Trademarks
based on foreign priority. Hence a foreign trademark can be
registered in Nigeria within six (6) months of registration in the
home country. The effective date of registration in Nigeria based
on the claim of foreign priority will be the date of initial
registration in the home country.
This could be an effective tool to catch out trolls who upon the launch of the product in the foreign country seek to conclude a registration in Nigeria within that six (6) month window.
- TRIPS Agreement:
Based on the recognition and nominal protection which the Trade
Related Aspects of Intellectual Property Agreement (TRIPS) gives to
"well-known" Marks. Infringers and trolls who
ordinarily wish to unfairly ride on the popularity of a well-known
Mark in Nigeria can effectively be checked even without need for a
separate registration in Nigeria.
Equally the principle of well-known marks can be used by the foreign business during Opposition proceedings to prevent the registration of a conflicting local mark.
However this stresses the need for a vigilant trademark watch service.
- Patent Cooperation Treaty
(PCT) 1970: The principle of territoriality is
particularly complex with regards to Patents because; the
principles and procedure for grant of Patents differs more sharply
between nations than any other aspect of Intellectual Property
To address these challenges, the Patent Cooperation Treaty was introduced. It provides a simplified procedure where filing of a Patent application is done using the International Bureau of WIPO, and the application then undergoes several procedures and thereafter the applicant can apply and obtain protection in many different nations.
One unique advantage of the PCT is that it enables the applicant to obtain an International filing date, i.e. the date of first filing which is retained in the application the applicant files in every other designated nation. This date serves as the date of effective filing and could be used to freeze out any subsequent attempts to file by a troll in Nigeria.
iv. Industrial Designs
Unfortunately, Nigeria is not a signatory to the Hague Agreement on Industrial Designs which creates a unique "international" system for the registration of Industrial Designs.
Hence they is the urgent need to register foreign Industrial Designs before importation of the product bearing the designs into Nigeria, otherwise the right to register will be lost forever.
5. Summary and Conclusion
A comprehensive Intellectual Property protection strategy may well spell the difference between success and failure for a foreign business in Nigeria. Every foreign company that has products with prospects in Nigeria must take a hard look at this.
An example of the effect of a good Intellectual Property protection strategy was demonstrated in the decided case of Exxon Corporation v. Exxon Nominees Industries (1989) FHCLR 1. The case was decided by the Federal High Court of Nigeria.
The case was brought by Exxon Corporation (before its merger with Mobil) alleging that the Defendants (Exxon Nominees Industries) were passing-off their registered Trademark "Exxon". The Court decided importantly that; a foreign Company like ExxonMobil though unincorporated in Nigeria could register and hold a Trademark and also sue for infringement.
On the flipside, we have the Sydney 2000 Olympics ambush-marketing scenario that aptly highlights the dangers of not domestically protecting Intellectual Property that has an international flavour. In 1993, while selection of the Olympic host for the year 2000 was ongoing, a 3rd party cunningly filed for Trademark registration over the unique City +Year word mark for all the leading candidate cities in their respective countries. When Sydney was eventually selected, the 3rd party threatened to sue the IOC partners if they used "Sydney 2000" to reference the year 2000 Olympic Games. Thankfully, the issue was resolved and a wonderful sports fiesta held.
Thus, it is important that foreign companies whose products and services have prospects in the Nigeria market, take steps to protect their Intellectual Property whether they plan to set up shop or operate through local agents.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.